Patents & Trade Marks

Focus: Patents, Designs and Trade Marks

19 December 2006

In this issue:
Progress in Australian patent reform in defences to infringement, practical
considerations of entitlement and inventorship in Australian patents, update on
IntellectualProperty Laws Amendment Act 2006, Christmas closure dates, Colin Oberin retires and AAR awards.

In brief:
Partner Chris
Bird(view CV) provides an update on progress in legislative reform of the
Australian Patents Act 1990
(Cth) concerning exemptions
to infringement of a patent for experimental use and crown use.

Experimental use

The likely adoption of an experimental use exemption will bring Australia into
harmony with many other jurisdictions. The clarification it will provide is also
welcome. However, it is essential that a statutory wording be chosen that avoids
any ambiguity or uncertainty.

Background

The Advisory Council on Intellectual Property
(ACIP) published an Issues
Paper in
February 2004 on the introduction of an experimental use exemption to
infringement in the Australian Patents Act 1990 (the
Act). The initial
round of submissions led to the release of an Options Paper in December 2004, outlining a number of
proposals endorsed by ACIP for further comment and public consultation. In
November 2005, ACIP released the Final Report on Patents and Experimental Use
(ACIP Report), advocating
(see recommendation 1) that the Act be amended to clarify:

'The rights of a patentee are not infringed by acts done for experimental
purposes relating to the subject matter of the invention that do not
unreasonably conflict with the normal exploitation of a patent. Acts done for
experimental purposes ... include:

determining how the invention works;

determining the scope of the invention;

determining the validity of the claims; and

seeking an improvement to the invention.'

In September 2006, ACIP released a Public Consultation Paper to provide an
opportunity for interested parties to make written submissions addressing four
specific questions directed at gauging the appropriateness of recommendation 1,
and whether interested parties have in the past been impacted by the absence of
an exemption from infringement for such activities. ACIP then published an
Overview of Responses to the Public Consultation Paper in November 2006.

Outcome of the public consultation

Approximately two-thirds of the parties who provided comments supported the
introduction of an experimental use exemption. All but two submissions supported
the wording used in recommendation 1 of the ACIP Report. Some parties raised
concerns about the clarity of recommendation 1, submitting that it was unclear
whether the existence of a commercial purpose or objective precludes the
application of the exemption.

Changes were also suggested to the wording of
recommendation 1. Half of the responses supported the view that the phrase
'seeking an improvement to the invention' be clarified by the addition
of 'determining new properties of, or new uses of, an invention'.

An Inter-departmental Committee has been established to develop a draft
response to the ACIP Report for consideration by the Federal Government. It is
anticipated that this response will be released in mid-2007.

Crown use

With widespread corporatisation of government organisations, the Australian
Government is taking the wise step of looking at whether the existing Crown use
provisions are still appropriate, or whether changes are needed.

Purpose of the provisions

Australian legislation allows the Crown to use patents (as well as designs)
owned by other parties without first obtaining the authorisation of the owner.
The owner must be notified and compensated, but if the owner considers the
proposed compensation inadequate, he or she needs to apply to a court for a
decision on adequate compensation. The purpose of these provisions is to ensure
that the Crown is not impeded from acting in the public interest by patent or
design rights, particularly in public emergencies and defence.

In light of widespread corporatisation of government organisations, ACIP has
considered whether these provisions continue to reflect their intended
purpose.

ACIP released a discussion paper in December 2003 and
received a number of written submissions. In December 2005, ACIP released its report.

ACIP's recommendations

ACIP recommended a more transparent and accountable process be introduced
into the Crown use provisions. This includes the requirement that the Crown
first seeks the prior consent of the rights owner and negotiates on reasonable
commercial terms before resorting to the Crown use provisions. ACIP also
recommended that access to the Crown use provisions should be controlled and
centralised through a system of ministerial approval, which would be required
before the provisions could be invoked. Finally, ACIP recommended the
introduction of a remuneration standard to ensure there is consistency and some
level of certainty when courts and parties determine the amount of remuneration
to be given to IP owners for use of their patent or design.

Next steps

In November 2006, IP Australia began a process of consultation with relevant
Australian Government departments and key non-government stakeholders to assist
the drafting of the Federal Government's response to the ACIP recommendations.
The Government's report is anticipated to be released in late 2007.

We will continue to monitor the progress of these reforms to Australian
patent law, and inform our clients and contacts if, and when, the changes are
enacted.

In brief: In our
December 2006 Intellectual Property Bulletin, we reported
on the Full Court of the Australian Federal Court's decision in University
of British Columbia and Anor v Conor Medsystems [2006] FCAFC 154
(Conor). The majority judgment in Conor
provides a cautionary
reminder of some critical practical issues that should be kept in mind by patent
applicants and by those responsible for pending Australian patent applications.
Patent Attorney Anthony Selleck reports.

The case

In particular, sections of the majority judgment concerning the effect of
claim amendments during prosecution on the issue of entitlement highlight the
importance of addressing the separate questions of:

who are the inventors? and

how does each nominated party obtain its rights to grant of the
patent?

at the time of filing the application and at all
times during pendency of the application.

Practical implications

It is very important that consideration be given to whether inventorship may
be affected by any significant events that take place throughout prosecution of
an Australian patent application. If substantial amendments to the claims are
made, this may result in a situation in which a particular person ceases to be
an inventor of the invention as claimed, or a particular person becomes an
additional inventor of the invention as claimed. Individual inventors may be
readily added or removed if, and when, required during prosecution of Australian
patent applications.

As the decision in Conor illustrates, serious consequences for the validity
of the Australian patent may result from a failure to take these steps at the
appropriate time.

Since our last full report in
Focus: Intellectual
Property - April 2006, the Intellectual Property Laws
Amendment Bill 2006 received Royal Assent on 27 September 2006. The
Intellectual Property Law Amendment Act 2006
(Cth) (the
Act) therefore commenced on that date. The Act amends
the Trade Marks Act 1995 (Cth), the Designs Act 2003 (Cth),
the Olympic Insignia Protection Act 1987 (Cth), the Patents Act
1990 (Cth), and the Plant Breeder's Rights Act 1994 (Cth). Certain
provisions commenced on the day after
Royal Assent,
while other provisions require Regulations to be implemented before coming into
effect. It is expected that will occur before the end of March
2007. We will therefore report further in the New Year on progress with regard
to implementation of the remaining provisions of the Act.

Please note that IP Australia's State and Canberra offices will be closed at
various times during the Christmas and New Year public holidays.

The Canberra office of IP Australia will be closed from
25 December 2005 to 1 January 2007 inclusive. IP Australia's
State Receiving Offices (except Hobart) will be open on 28 and 29
December 2006, as these days are not public holidays for the purposes
of the relevant Acts. All IP Australia offices will re-open on 2 January
2007.

Any deadlines falling due for patent, trade mark and design matters on the
days IP Australia's state receiving offices are closed will automatically be
extended to the next business day on which the office is open.

AAR staff will be available to deal with matters on all days that IP
Australia's state offices are open.

Where possible, please ensure you send us your instructions well in advance
of this time. This will assist us in dealing with your matters, particularly
where critical deadlines fall due around the Christmas and New Year period.

As previously announced, Colin Oberin retires from the partnership
on 31 December 2006. However, Colin's talents will not be lost to the firm or
our clients, as he becomes a consultant to the firm from 1 January 2007. As
a consultant, Colin will be available on a part-time basis to advise the firm and
our clients as needed.

Allens Arthur Robinson Patent & Trade Marks Attorneys can trace its
heritage back to the Oberins patent attorney firm established by Colin in 1987.
This firm first became associated with Arthur Robinson & Hedderwicks in
1993, and with subsequent mergers formed the Melbourne nucleus of our present
patent and trade marks attorneys practice.

The past year has seen a gradual transfer of Colin's leadership
responsibilities to Dr Trevor Davies in Sydney and Andrew Butler in Melbourne.
Although we will miss Colin's presence in the office, we are grateful to Colin
for his active mentoring over the years which has built an experienced team to
continue his high standard of expertise and client care.

We wish all our clients and colleagues
around the world Season's Greetings, and a happy and prosperous New Year. We
look forward very much to working with you in 2007 and
beyond.

In recognition of our world-class IP practice, comprising both patent and
trade mark attorneys and commercial and litigation IP Lawyers, AAR has been
named:

Leading Australia IP Firm 2007 for the fifth consecutive
year by Chambers Global - The World's Leading Lawyers, with a number of our patent, trade
marks, and copyright partners being ranked at the top of their field.

Leading Australian IP Firm 2006 for
the second consecutive year by Asia Pacific Legal 500.

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